`Tel: 571-272-7822
`
`Paper 33
`Entered: March 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GENERAL ELECTRIC CO.
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORP.,
`Patent Owner.
`_______________
`
`IPR2016-00526
`Patent 7,966,807 B2
`_______________
`
`
`
`Before HYUN J. JUNG, RICHARD E. RICE, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`REVISED SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`REVISION TO SCHEDULING ORDER
`A.
`On August 3, 2016, we entered a Scheduling Order (Paper 8) setting,
`inter alia, DUE DATE 7 (the date for oral argument, if requested by either
`party) for May 1, 2017. We hereby change DUE DATE 7 to May 8, 2017,
`as set forth below in the DUE DATE APPENDIX. Further, the oral
`argument in this matter shall be consolidated with the oral argument in
`IPR2016-00534, which involves the same parties.
`The DUE DATE APPENDIX also includes the parties’ agreed upon
`adjustment of DUE DATE 2. Paper 27.
`
`B. GENERAL INSTRUCTIONS
`Requests for an Initial Conference Call
`1.
`No initial conference call is scheduled for this case. The parties may
`contact the Board to request a call if any issue arises during trial.
`Standing Procedure for Requests for Conference Calls
`2.
`In any request for a conference call with the Board, the requesting
`party shall: (a) certify that it has conferred with the other party in an effort
`to resolve any dispute; (b) identify with specificity the issues for which
`agreement has not been reached; (c) identify the precise relief to be sought;
`(d) state whether the other party opposes the relief to be sought; and (e)
`propose specific dates and times at which both parties are available for the
`conference call. Prior to contacting the Board, however, we encourage the
`parties to resolve any disputes arising in the proceeding on their own and in
`accordance with 37 C.F.R. § 42.1(b).
`
` 2
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`3. Motion to Amend
`Patent Owner is reminded that it must confer with the Board before
`filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner should
`contact the Board to request a conference in sufficient time to ensure that the
`conference is conducted at least two weeks before DUE DATE 1. Patent
`Owner and Petitioner are directed to the rules governing Motions to Amend,
`with particular regard to applicable page limits. 37 C.F.R. §§ 42.24(a)(1),
`42.24(b)(3), 42.24(c)(3), 42.121(b).
`Confidential Information
`4.
`The parties must file confidential information using the appropriate
`availability indicator in PTAB E2E (e.g., “Board and Parties Only”),
`regardless of whose confidential information it is. It is the responsibility of
`the party whose confidential information is at issue, not necessarily the
`proffering party, to file the motion to seal.
`A protective order does not take effect until a protective order is filed
`in the case and approved by the Board. If a motion to seal is filed by either
`party, the proposed protective order should be presented as an exhibit to the
`motion. The parties are urged to operate under the Board’s default
`protective order. See Default Protective Order, Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties propose
`a protective order deviating from the default protective order, they should
`submit the proposed order jointly. A marked-up comparison of the proposed
`and default protective orders should be presented as an additional exhibit to
`the motion to seal, so that differences are highlighted. The parties should
`contact the Board if they cannot agree on the terms of the proposed
`protective order.
`
` 3
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`a.
`
`Redactions
`
`Redactions should be limited strictly to isolated passages consisting of
`confidential information. The thrust of the underlying argument or evidence
`must be discernable from the redacted version.
`Confidential Information in Final Written Decision
`b.
`
`Information subject to a protective order will become public if
`identified in a final written decision in this proceeding. A motion to
`expunge the information will not necessarily prevail over the public interest
`in maintaining a complete and understandable file history. See Office Patent
`Trial Practices Guide, 77 Fed. Reg. at 48, 761.
`
`C. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. The parties may not stipulate to an extension of DUE
`DATES 6 and 7.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony (see section B, below).
`The parties are reminded that the Testimony Guidelines appended to
`the Office Trial Practice Guide, 77 Fed. Reg. at 48,772 (Appendix D), apply
`to this proceeding. The Board may impose an appropriate sanction for
`
` 4
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
`example, reasonable expenses and attorneys’ fees incurred by any party may
`be levied on a person who impedes, delays, or frustrates the fair examination
`of a witness.
`DUE DATE 1
`1.
`The patent owner may file—
`a. A response to the petition (37 C.F.R. § 42.120), and
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by
`DUE DATE 1. If the patent owner elects not to file anything, the patent
`owner must arrange a conference call with the parties and the Board. The
`patent owner is cautioned that any arguments for patentability not raised in
`the response will be deemed waived.
`DUE DATE 2
`2.
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`DUE DATE 3
`3.
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`DUE DATE 4
`4.
`a. Each party must file any motion for an observation on the cross-
`examination testimony of a witness (see section C, below) by DUE DATE 4.
`b. Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`DUE DATE 4.
`
` 5
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`DUE DATE 5
`5.
`a. Each party must file any reply to an observation on cross-
`examination testimony by DUE DATE 5.
`b. Each party must file any opposition to a motion to exclude evidence
`by DUE DATE 5.
`DUE DATE 6
`6.
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`DUE DATE 7
`7.
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`D. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1. Cross-examination begins after any supplemental evidence is due.
`37 C.F.R. §§ 42.53(d)(2).
`2. Cross-examination ends no later than a week before the filing date
`for any paper in which the cross-examination testimony is expected to be
`used. Id.
`E. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`A motion for observation on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a witness, since no further substantive paper is
`permitted after the reply. See Office Trial Practice Guide, 77 Fed. Reg. at
`48,768. The observation must be a concise statement of the relevance of
`precisely identified testimony to a precisely identified argument or portion
`of an exhibit. Each observation should not exceed a single, short paragraph.
`
` 6
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`The parties may respond to the observation. Any response must be equally
`concise and specific.
`
`
`
`
` 7
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`
`DUE DATE APPENDIX
`
`
`
`
`DUE DATE 1……………….……..…………….………...November 4, 2016
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2……………………………………….……February 20, 2017
`
`Petitioner’s reply to patent owner response to petition
`
`
`Petitioner’s opposition to motion to amend
`
`
`DUE DATE 3…….…………….……………………………..March 6, 2017
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4………………..……………...………………..March 27, 2017
`
`Motion for observation regarding cross-examination of a witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`
`DUE DATE 5…….……..…………..………..……..…………April 10, 2017
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6…….……………………………..……………..April 17, 2017
`
`Reply to opposition to motion to exclude
`
`
`DUE DATE 7….……………..……………………………….....May 8, 2017
`
`Oral argument (if requested)
`
`
`
`
`
`
` 8
`
`
`
`
`
`
`
`IPR2016-00526
`Patent 7,966,807 B2
`
`PETITIONER:
`
`Anish Desai
`Brian Ferguson
`Megan H. Wantland
`Christopher Pepe
`David J. Lender (pro hac vice)
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`brian.ferguson@weil.com
`megan.wantland@weil.com
`christopher.pepe@weil.com
`david.lender@weil.com
`GE.WGM.Service@weil.com
`
`PATENT OWNER:
`
`M. Andrew Holtman, Ph.D.
`Jason E. Stach
`Daniel Cooley
`Patrick J. Coyne
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER, LLP
`UTC-IPR@finnegan.com
`
`Michael J. Valaik (pro hac vice)
`BARTLIT BECK HERMAN PALENCHAR & SCOTT LLP
`michael.valaik@bartlit-beck.com
`
`
` 9
`
`
`
`
`
`